IPR Institution Requires Reasonable Likelihood that Reference Is Printed Publication

By on January 22, 2020

In a precedential opinion, the Patent Trial and Appeal Board (PTAB) held that, for institution of an inter partes review (IPR) based on a printed publication, the petitioner must establish a reasonable likelihood that the reference is a printed publication. Hulu, LLC v. Sound View Innovations, LLC, Case No. IPR2018-01039 (PTAB Dec. 20, 2019) (Boalick, CAPJ).

Hulu petitioned for IPR, challenging a Sound View patent and asserting obviousness over a prior art reference textbook by Dougherty. Sound View filed a preliminary response challenging Hulu’s showing that Dougherty was publicly available before the filing date of the challenged patent. The PTAB denied institution, finding insufficient evidence that Dougherty was publicly accessible.

Hulu requested rehearing and a precedential opinion panel review. The review was granted based on the following question: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”

The panel began with the standard for instituting an IPR—a “reasonable likelihood” that the petitioner will prevail—and applied the same standard to subsidiary questions. The panel held that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”

The panel rejected arguments for different standards. The standard is not more rigorous, as Sound View argued, because the institution standard is different from the “preponderance of the evidence” standard applied in final written decisions and the petitioner may submit additional evidence after institution. Neither is the standard more lenient, as some amici argued, because there is no presumption in favor of institution or of finding that a reference is a printed publication.

The panel declined to hold that any particular indicia of public accessibility are per se sufficient, insisting that the totality of the circumstances controls. In this case, Dougherty had sufficient indicia to meet the “reasonable likelihood” standard, including the fact that the Dougherty reference on its face “bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series.”

Having concluded that there was a reasonable likelihood that Dougherty was prior art to the challenged patent, the panel remanded the case to the merits panel to consider whether to institute a trial on the merits.

Practice Note: A published work is not self-evidently a “printed publication.” Petitioners should point out the indicia of public availability that are evident on the face of reference and should consider gathering additional evidence of public accessibility to ensure that they meets their evidentiary burden.

Paul Devinsky
Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.